`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., WATSON LABORATORIES, INC., DR. REDDY’S LABORATORIES,
`INC., DR. REDDY’S LABORATORIES, LTD., and SUN
`PHARMACEUTICALS INDUSTRIES LTD.,
`Petitioners,
`
`v.
`
`MERCK SHARP & DOHME CORP.
`Patent Owner.
`_______________
`
`Case IPR2020-000401
`Patent 7,326,708
`_______________
`
`UNOPPOSED JOINT MOTION TO WITHDRAW JOINDER AS TO
`PETITIONERS TEVA PHARMACEUTICALS USA, INC. AND WATSON
`LABORATORIES, INC.
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1 Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc. were joined as a
`party to this proceeding via Motion for Joinder in IPR2020-01045; Dr. Reddy’s
`Laboratories, Inc. and Dr. Reddy’s Laboratories, Ltd. were joined as a party to this
`proceeding via a Motion for Joinder in IPR2020-01060; and Sun Pharmaceuticals
`Industries Ltd. was joined as a party to this proceeding via Motion for Joinder in
`IPR2020-01072.
`
`
`
`
`
`Case IPR2020-00040
`Patent No. 7,326,708
`
`
`Pursuant to the Board’s December 8, 2020 Termination Order in Teva
`
`Pharmaceuticals USA, Inc. and Watson Laboratories, Inc. v. Merck Sharp &
`
`Dohme Corp. (IPR2020-01045, Paper 25), Merck Sharp & Dohme Inc. (“Merck”)
`
`and Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc. (collectively,
`
`“Teva”) respectfully submit this Unopposed Joint Motion to Withdraw Joinder as
`
`to Petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Merck and Teva respectfully request that the Board allow Teva to withdraw
`
`as Joinder Petitioner from this matter.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On October 30, 2019, Mylan Pharmaceuticals Inc. (“Mylan”) filed a
`
`Petition for Inter Partes Review regarding U.S. Patent No. 7,326,708, owned by
`
`Merck. (IPR2020-00040, Paper 1)
`
`2.
`
`On May 12, 2020, the Board instituted this trial based on that petition.
`
`(IPR2020-00040, Paper 21).
`
`3.
`
`On June 10, 2020, Teva filed a Petition for Inter Partes Review
`
`(IPR2020-01045, Paper 3) that was substantively identical to the petition filed by
`
`Mylan, as well as a Motion for Joinder, seeking to be joined to the IPR filed by
`
`Mylan (IPR2020-01045, Paper 4).
`
`1
`
`
`
`Case IPR2020-00040
`Patent No. 7,326,708
`
`
`4.
`
`On September 1, 2020, the Board instituted Teva’s petition and
`
`granted the motion for joinder. (IPR2020-01045, Paper 21). On that same date,
`
`the Board granted similar motions for joinder filed by Dr. Reddy’s Laboratories,
`
`Inc. and Dr. Reddy’s Laboratories, Ltd. (collective, “DRL”) and Sun
`
`Pharmaceuticals Industries Ltd. (“Sun”). (IPR2020-01045, Paper 21 at 13).
`
`5.
`
`On November 24, 2020, Merck and Teva filed a Joint Motion to
`
`Terminate IPR2020-01045 as a result of a settlement between the parties.
`
`(IPR2020-01045, Paper 22).
`
`6.
`
`On December 8, 2020, the Board terminated IPR2020-01045.
`
`(IPR2020-01045, Paper 25).
`
`III. ARGUMENT
`
`Teva and Merck respectfully submit that in view of the Board’s Termination
`
`Decision in IPR2020-01045, Teva should be permitted to withdraw as a joinder
`
`petitioner from this matter. Counsel for petitioners Mylan, DRL, and Sun have
`
`indicated Mylan, DRL and Sun do not oppose this motion.
`
`IV. CONCLUSION
`
`For the reasons stated above, Merck and Teva respectfully request that
`
`petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc. be
`
`withdrawn as Joinder Petitioners in this matter.
`
`
`
`2
`
`
`
`Case IPR2020-00040
`Patent No. 7,326,708
`
`Date: December 15, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/Stanley E. Fisher/
`Stanley E. Fisher (Reg. No. 55,820)
`Bruce R. Genderson (Pro Hac Vice)
`David M. Krinsky (Reg. No. 72,339)
`Elise M. Baumgarten (Pro Hac Vice)
`Alexander S. Zolan (Pro Hac Vice)
`Shaun P. Mahaffy (Reg. No. 75,534)
`Anthony H. Sheh (Reg. No. 70,576)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5000
`F: (202) 434-5029
`sfisher@wc.com
`bgenderson@wc.com
`dkrinsky@wc.com
`ebaumgarten@wc.com
`azolan@wc.com
`smahaffy@wc.com
`asheh@wc.com
`
`Counsel for Patent Owner
`Merck Sharp & Dohme Corp.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Keith A. Zullow/
`Keith A. Zullow (Reg. No. 37,975)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212-813--8800
`Fax: 212-355-3333
`kzullow@goodwinlaw.com
`
`Counsel for Petitioners Teva
`
`3
`
`
`
`Case IPR2020-00040
`Patent No. 7,326,708
`
`
`Pharmaceuticals USA, Inc. and
`Watson Laboratories, Inc.
`
`4
`
`
`
`Case IPR2020-00040
`Patent No. 7,326,708
`
`
`CERTIFICATION OF SERVICE ON PETITIONERS
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies service of the
`
`foregoing Unopposed Joint Motion to Withdraw Joinder as to Petitioners Teva
`
`Pharmaceuticals USA, Inc. and Watson Laboratories, Inc. on the counsel of record
`
`for the Petitioners via electronic mail to the following addresses:
`
`Jitendra Malik
`Alissa M. Pacchioli
`Christopher W. West
`Heike S. Radeke
`KATTEN MUCHIN ROSEMAN LLP
`550 South Tryon, Street Suite 2900
`Charlotte, NC 28202-4213
`(704) 444-2000
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
`
`Russell W. Faegenburg
`Tedd W. Van Buskirk
`Michael H. Teschner
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, New Jersey 07016
`(908) 518-6367
`Rfaegenburg.ipr@ldlkm.com
`Tvanbuskirk@lernerdavid.com
`litigation@lernerdavid.com
`MTeschner.ipr@ldlkm.com
`
`Keith A. Zullow
`Sarah J. Fischer
`Emily L. Rapalino
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eight Avenue
`New York, NY 10018
`kzullow@goodwinprocter.com
`sfischer@goodwinprocter.com
`erapalino@goodwinprocter.com
`
`Jovial Wong
`Charles B. Klein
`Claire A. Fundakowski
`Zachary B. Cohen
`WINSTON & STRAWN LLP
`1901 L. Street, N.W.
`Washington, D.C. 20036
`(202) 282-5000
`Sunipr@winston.com
`
`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
`
`5
`
`
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